Patent Filings Roundup: Second Mystery Entity Challenges $2.2 Billion VLSI/Fortress Patents; IP Edge Files Almost 50 New Complaints; NPE K.Mizra Targets ISPs

By Jonathan Stroud
July 9, 2021

https://depositphotos.com/3834376/stock-photo-lawsuit.htmlIt was a busy week for patent filings in the district courts, with 113 complaints filed, fueled particularly by nearly 50 (!) IP Edge complaints, primarily filed in the Western District of Texas’s Waco Division; the Patent Trial and Appeal Board (PTAB), on the other hand, was slightly down, with 29—the bulk coming from Intel counterpunching with seven challenges against AQUIS-asserted patents. 

Second Mystery Entity Files IPR on VLSI Patents: A second unknown LLC of recent vintage has filed an IPR challenge against the patents that formed the basis of the recent $2.18 billion judgment against Intel in Judge Albright’s court. The first, OpenSky, LLC, effectively copied earlier challenges by Intel—ones denied under Fintiv for a trial date that was pushed back but eventually led to the judgment. This second, Patent Quality Assurance, LLC, appears to be tied to Austin-area former Baker Botts lawyers, but is of murky origin. The petition purports to fix problems with the OpenSky petition (namely, the retention of different testifying experts) and begs institution over the other. Motivations remain murky, but one can imagine the value attached to having the Office hear the challenge on the merits.

K.Mizra NPE expands, targets ISPs: A set of patents of older non-practicing entity (NPE) vintage, but newer ownership/management, has moved on to target the big four major U.S internet service providers, namely AT&T, Sprint, T-Mobile, and Verizon. The patents’ disclosure, while using oddly cryptic nomenclature, includes relatively short claims directed to generic base station communication. The patent has previously been asserted against others. The patents and K.Mizra’s pedigree include another subsidiary, Ginegar IP, and patents collected from Daedalus Blue and other NPE entities; K.Mizra appears to be a foreign-owned entity controlled by Charles Jourdan Hausman.

IP Edge Files Almost 50: By my count, known IP Edge subsidiaries this week filed 47 complaints—almost half of all district court filings—including newer entities like Orbit Licensing, which is asserting patents licensed from Chinese company Huawei against U.S. companies. Those subsidiaries include Swirlate IP LLC, Altair Logix LLC, Crimson IP LLC, Orbit Licensing, Invincible IP, Lecrew Licensing LLC, Mellaconic IP LLC, Tunnel IP LLC, and more; most follow the single patent file-and-settle strategy, though there is some evidence (such as with Orbit Licensing) that IP Edge is changing strategies and investing in bigger portfolios, including a number of IP Bridge-transferred patents.

PTAB (29)

Case Number Action Owner Petitioner Patent
IPR2021-01024 Filed Ch?gai Seiyaku Kabushiki Gaisha Fresenius Kabi USA, LLC
Fresenius Kabi Swissbiosim Gmbh
7521052
IPR2021-01207 Filed Varta Microbattery Gmbh [Michael Tojner, PhD, LLD] Guangdong Mic-Power New Energy Co., Ltd.
Peag LLC (d/b/a JLAB Audio)
Audio Partnership LLC
Audio Partnership PLC (d/b/a Cambridge Audio)
GN Audio A/S AND GN Audio USA INC. d/b/a Jabra
10804506
IPR2021-01204 Filed Medy-Tox, Inc. Revance Therapeutics, Inc. 9480731
IPR2021-01161 Filed Neodron Ltd. [Magnetar Capital, Atlantic IP] STMicroelectronics, Inc. 8749251
IPR2021-01191 Filed WSOU Investments, LLC d/b/a Brazos Licensing and Development [WSOU Holdings, LLC; Craig Etchegoyen] Unified Patents, LLC 7333770
IPR2021-01145 Filed Express Mobile, Inc. SAP America, Inc. 9471287
IPR2021-01093 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation 8626977
IPR2021-01066 Filed U.S. Well Services, LLC Halliburton Energy Services, Inc. 10020711
IPR2021-01114 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation RE44654
IPR2021-01205 Filed Blue Yonder Group Inc. [RedPrairie Holding Incorporated] Kinaxis Corp 7050874
IPR2021-01206 Filed Varta Microbattery Gmbh [Michael Tojner, PhD, LLD] Guangdong Mic-Power New Energy Co., Ltd.
Peag LLC (d/b/a JLAB Audio)
Audio Partnership PLC (d/b/a Cambridge Audio)
GN Audio A/S AND GN Audio USA INC. d/b/a Jabra
10971776
IPR2021-01113 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation RE44654
IPR2021-01057 Filed Japan Display Inc. Tianma Micro-electronics Co., Ltd. 7385665
IPR2021-01144 Filed Express Mobile, Inc. SAP America, Inc. 9063755
IPR2021-01099 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation 9529769
IPR2021-01196 Filed Asetek Danmark A/S CoolIT Systems, Inc. 10599196
IPR2021-01025 Filed Ch?gai Seiyaku Kabushiki Gaisha Fresenius Kabi USA, LLC
Fresenius Kabi Swissbiosim Gmbh
10744201
IPR2021-01160 Filed Neodron Ltd. [Magentar Capital, Atlantic IP] STMicroelectronics, Inc. 8749251
IPR2021-01203 Filed Medy-Tox, Inc. Revance Therapeutics, Inc. 9480731
IPR2021-01102 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation RE44739
IPR2021-01059 Filed Japan Display Inc. Tianma Micro-electronics Co., Ltd. 8830409
IPR2021-01197 Filed Bard Peripheral Vascular, Inc Atrium Medical Corporation 7959615
IPR2021-01198 Filed International Business Machines Corporation Chewy, Inc 6704034
IPR2021-01202 Filed Sage Products, LLC [Sage Products, Inc.] Becton, Dickinson and Company 10688067
IPR2021-01201 Filed Sage Products, LLC [Sage Products, Inc.] Becton, Dickinson and Company 10398642
IPR2021-01214 Filed Macroair Technologies, Inc, Delta T, LLC [Spectris PLLC] 8579588
IPR2021-01146 Filed Express Mobile, Inc. SAP America, Inc. 9928044
IPR2021-01095 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation 8756359
IPR2021-01094 Filed Acqis LLC [Acqis Technology Incorporated, William Chu] Intel Corporation 8756359
IPR2021-00341 Not Instituted – Merits Ethanol Boosting Systems, LLC
Massachusetts Institute of Technology
Ford Motor Company 9708965
IPR2021-00339 Not Instituted – Merits Massachusetts Institute of Technology
Ethanol Boosting Systems, LLC
Ford Motor Company 10619580
IPR2021-00227 Not Instituted – Merits WSOU Investments, LLC d/b/a Brazos Licensing and Development [WSOU Holdings, LLC; Craig Etchegoyen] Huawei Technologies Co., Ltd. 9084199
IPR2021-00410 Not Instituted – Merits Fundamental Innovation Systems International LLC [Fundamental Innovation Systems International Holdings LLC, Centerbridge Partners] TCT Mobile US Inc.
TCT Mobile US Holdings Inc.
Huizhou TCL Mobile Communication Co. Ltd.
TCL Communication, Inc.
6936936
IPR2021-00340 Not Instituted – Merits Massachusetts Institute of Technology
Ethanol Boosting Systems, LLC
Ford Motor Company 10781760
IPR2021-00229 Instituted WSOU Investments, LLC d/b/a Brazos Licensing and Development [WSOU Holdings, LLC; Craig Etchegoyen] Huawei Technologies Co., Ltd.
Huawei Device USA Inc.
Huawei Technologies USA, Inc.
Huawei Investment & Holding Co Ltd
Huawei Device (Shenzhen) Co.,Ltd.
8429480
IPR2021-00335 Instituted GUI Global Products, Ltd., D/B/A Gwee [GUI Global Management, LLC] Samsung Electronics Co., Ltd
Samsung Electronics America, Inc.
10259020
IPR2021-00272 Instituted WSOU Investments, LLC d/b/a Brazos Licensing and Development [WSOU Holdings, LLC; Craig Etchegoyen] Dell Technologies Inc.
Dell, Inc.
EMC Corporation
8913489
IPR2021-00338 Instituted GUI Global Products, Ltd., D/B/A Gwee [GUI Global Management, LLC] Samsung Electronics Co., Ltd
Samsung Electronics America, Inc.
10589320
IPR2021-00311 Instituted AutoStore Technology AS Ocado Group PLC 10474140
IPR2021-00336 Instituted GUI Global Products, Ltd., D/B/A Gwee [GUI Global Management, LLC] Samsung Electronics Co., Ltd
Samsung Electronics America, Inc.
10259021
IPR2021-00293 Instituted C. A. Casyso GMBH HemoSonics LLC 10746750
IPR2021-00337 Instituted GUI Global Products, Ltd., D/B/A Gwee [GUI Global Management, LLC] Samsung Electronics Co., Ltd
Samsung Electronics America, Inc.
10562077
IPR2021-00381 Instituted Koss Corporation Apple, Inc 10491982
IPR2020-01473 Adverse Judgment Dali Wireless Inc. CommScope Technologies LLC 10080178
IPR2020-01476 Adverse Judgment Dali Wireless Inc. CommScope Technologies LLC 9847816
IPR2020-01408 Adverse Judgment Dali Wireless Inc. CommScope Technologies LLC 10045314
IPR2020-00352 Final Written Decision Velos Media, LLC [Inception Holdings, LLC, various] Unified Patents, LLC 9414066
IPR2020-00345 Final Written Decision Remote Imaging Solutions LLC [Endpoint IP] DJI Technology, Inc. 8918230
IPR2020-00476 Final Written Decision Cellect, LLC [Micro-Imaging Solutions, LLC (f/k/a Micro-Imaging Solutions, Inc.; f/k/a Micro-Medical Devices, Inc.] Samsung
Samsung Electronics Co., Ltd
Samsung Electronics America, Inc.
9198565
IPR2020-00323 Final Written Decision Trusted Knight Corporation IBM Corporation 9503473
IPR2020-00353 Final Written Decision Hanwha Q Cells & Advanced Materials Corp. LONGi Solar Technology K.K.
LONGi Green Energy Technology Co., LTD.
LONGI (H.K.) TRADING LTD.
LONGI (KUCHING) SDN. BHD.
LONGI SOLAR TECHNOLOGY (TAIZHOU) CO., LTD.
8933525
IPR2020-00360 Final Written Decision No Spill Inc.
NSIP Holdings LLC
Scepter Canada, Inc
Myers Industries, Inc
10029132

District Court (113)

Case Number Action Plaintiff Defendant Patent
1:21-cv-00917 Filed Swirlate IP LLC [IP Edge] Sensitech Inc. 7154861
7567622
1:21-cv-00919 Filed Altair Logix LLC [IP Edge] Spreadtrum Communications USA Inc. 6289434
2:21-cv-05278 Filed BelAir Electronics, Inc. Valfre, LLC 7941195
10097676
2:21-cv-00238 Filed RightQuestion, LLC [Bjorn Markus Jakobsson] Samsung Group 10824696
10929512
1:21-cv-00929 Filed PF Prism IMB BV; Warner-Lambert Co. LLC; Pfizer Qilu Pharmaceutical Co., Ltd. 10723730
1:21-cv-00930 Filed Crimson IP LLC [IP Edge] Enghouse Networks (US) Inc. 8868070
1:21-cv-00932 Filed Crimson IP LLC [IP Edge] Mobileum, Inc. 8868070
1:21-cv-00934 Filed Crimson IP LLC [IP Edge] Valid Secure Packaging, LLC 8868070
1:21-cv-00935 Filed Heritage IP LLC [IP Edge] Boston Scientific Corp. 6854067
6:21-cv-00686 Filed Decapolis Systems, LLC [Raymond Anthony Joao] Conceptual Mindworks, Inc. 7490048
7464040
5:21-cv-05078 Filed AT&T Services, Inc
AT&T, Inc.
Voip-Pal.com, Inc. 10880721
8630234
1:21-cv-03508 Filed Hydro Net LLC Winegard Co 7187706
1:21-cv-00951 Filed AO Smith Corporation
AOS Holding Company
Water Heating Technologies Corp.
Ariston Thermo USA, LLC
8375897
1:21-cv-00954 Filed Invincible IP, LLC [IP Edge] Citrix Systems, Inc. 9635134
9479472
8938634
9678774
8954993
1:21-cv-00955 Filed Invincible IP, LLC [IP Edge] Nutanix, Inc. 9635134
8938634
9678774
1:21-cv-00964 Filed Orbit Licensing LLC [IP Edge] OnApp, Inc. 9497035
9578040
6:21-cv-00690 Filed DexCom, Inc. Abbott Laboratories
Abbott Diabetes Care Sales Corp.
10980452
10702193
10702215
10993642
11000213
1:21-cv-00968 Filed P Tech, LLC Arthrex, Inc. 10517584
10881440
10376259
9814453
9999449
9579129
1:21-cv-00916 Filed Swirlate IP LLC [IP Edge] Ametek, Inc. 7154861
7567622
6:21-cv-00681 Filed Xiros, Ltd. DePuy Synthes, Inc.
Medical Device Business Services, Inc.
DePuy Synthes Sales, Inc.
Chad Connor, M.D.
Depuy Orthopaedics, Inc.
et al.
10835266
9125674
10835265
9265511
8:21-cv-01133 Filed Hyper Ice, Inc, MerchSource, LLC 10912708
1:21-cv-00926 Filed Digital Cache, LLC [Oso IP, LLC] NetApp, Inc. 6851015
1:21-cv-00942 Filed Lecrew Licensing LLC [IP Edge] Sonos 9516370
1:21-cv-00945 Filed Mellaconic IP LLC [IP Edge] Fantasia Trading, LLC 9986435
1:21-cv-01774 Filed Tunnel IP LLC [IP Edge] QSC, LLC 7916877
1:21-cv-01922 Filed Amphastar Pharmaceuticals Inc. Eli Lilly & Co. 7517334
2:21-cv-05300 Filed Infinilux Corporation Nicor, Inc.
1:21-cv-00952 Filed Cephalon, Inc.
Eagle Pharmaceuticals, Inc
Teva Pharmaceuticals International GmbH
Accord Healthcare
Intas Biopharmaceuticals
9034908
9144568
9579384
9597399
9572887
9572797
9265831
9572796
9000021
8609707
10052385
9597398
10010533
9597397
1:21-cv-00953 Filed Orbit Licensing LLC [IP Edge] Wowza Media System, LLC 9497035
9578040
1:21-cv-00956 Filed Invincible IP, LLC [IP Edge] Alibaba Cloud US LLC 9635134
9479472
8938634
9678774
8954993
1:21-cv-00960 Filed Invincible IP, LLC [IP Edge] NetApp, Inc. 9635134
9479472
8938634
9678774
8954993
1:21-cv-00962 Filed Orbit Licensing LLC [IP Edge] Tencent America, LLC 9497035
9578040
1:21-cv-01780 Filed Fairway IP LLC [IP Edge] Hitron Technologies America Inc. 7184405
6:21-cv-00689 Filed Xylon Licensing LLC [IP Edge] First National Bank of Bastrop 8719165
6:21-cv-00692 Filed Liberty Patents, LLC [Antonelli, Harrington, & Thompson LLP; Jon Rowan] Lattice Semiconductor Corp. 8458496
8127156
7509504
1:21-cv-00970 Filed Internet Media Interactive Corp. Sightline Media Group, LLC 6049835
1:21-cv-00977 Filed Abbott Laboratories
Abbott Diabetes Care Limited
DexCom, Inc. 10959654
10820842
10945647
10952653
11000216
10973443
10827954
10874338
10966644
10881341
11013440
10945649
3:21-cv-13247 Filed Auspex Pharms., Inc.
Teva Pharmaceutical
Lupin Limited 9233959
9814708
9550780
9296739
6:21-cv-00695 Filed XR Communications, LLC Microsoft 10715235
4:21-cv-00512 Filed Michigan Motor Technologies, LLC [Equitable IP] Jaguar Land Rover Ltd
Tata Motors Ltd.
6558260
6581565
6736122
6581574
6557540
8909482
1:21-cv-00981 Filed Astex Therapeutics Ltd
Novartis
MSN LABORATORIES PVT., LTD.
MSN Pharmaceuticals Inc.
9416136
8415355
8685980
8962630
8324225
6:21-cv-00679 Filed Grecia Estate Holdings LLC [William Grecia] Starbucks Corporation 8402555
2:21-cv-00234 Filed Jabaa, LLC Foot Locker, Inc. 7480637
1:21-cv-00933 Filed Crimson IP LLC [IP Edge] Truphone, Inc. 8868070
1:21-cv-00938 Filed Orbit Licensing LLC [IP Edge] Akamai Technologies, Inc. 9497035
9578040
1:21-cv-00940 Filed Lecrew Licensing LLC [IP Edge] Bang & Olufsen America, Inc. 9516370
1:21-cv-00947 Filed AO Smith Corporation
AOS Holding Company
Rheem Manufacturing Co. 8375897
1:21-cv-00949 Filed Orbit Licensing LLC [IP Edge] Red Hat, Inc. 8839195
9578040
8:21-cv-01568 Filed Harmony Licensing LLC [IP Edge] Roper Technologies, Inc. RE42219
5:21-cv-01260 Filed Mellaconic IP LLC [IP Edge] Genie Company 9986435
6:21-cv-00682 Filed BJ Energy Solutions, LLC EVOLUTION WELL SERVICES, LLC 9395049
6:21-cv-00687 Filed The ADT Security Corporation
ADT
Vivion, Inc. 8976937
9286772
2:21-cv-00407 Filed Axcess Global Sciences
Pruvit Ventures
New U Life Corp
New U Life Disc
10736861
2:21-cv-00241 Filed K.Mizra LLC [Ginegar IP, Charles Jourdan Hausman] AT&T Communications, LLC
AT&T, Inc.
8958819
1:21-cv-03507 Filed Lecrew Licensing LLC [IP Edge] Dynaudio North America Inc 9516370
1:21-cv-05685 Filed Bobcar Media, LLC DEUTSCHE TELEKOM AG (d/b/a TMOBILE), T-MOBILE USA, INC., SAMSUNG ELECTRONICS CO. LTD., and SAMSUNG ELECTRONICS AMERICA, INC D736675
D652353
8220854
8690215
D678823
7942461
3:21-cv-00981 Filed Cozy Comfort Company LLC The Coozzy D859788
D905380
5:21-cv-05110 Filed Apple Voip-Pal.com, Inc. 10880721
8630234
1:21-cv-00971 Filed Onstream Media Corporation Kaltura, Inc. 10694142
9161068
10200648
10848707
10038930
9467728
10674109
1:21-cv-03558 Filed Shaoyun Wu Partnerships and Unicorporated Associations Identified on Schedule “A”, The
2:21-cv-01147 Filed Sansi LED Lighting Incorporated Lighting Defense Group LLC 8939608
1:21-cv-00616 Filed Unirac, Inc. Ironridge, Inc.
Esdec, Inc.
8128044
7434362
2:21-cv-03705 Filed Heritage IP LLC [IP Edge] Cannon, Inc. 6854067
3:21-cv-01550 Filed Mcom IP, LLC [Mcom IP Holdings, LLC] Avaya Holdings Corp. 8862508
6:21-cv-00701 Filed Smart Mobile Technologies LLC Samsung Group 8472936
8761739
9191083
9756168
9019946
8824434
8442501
8842653
9084291
9614943
9049119
8472937
1:21-cv-00913 Filed Magnacross [IP Edge] Cubic Corp 6917304
1:21-cv-00920 Filed Stormborn Technologies LLC [IP Edge] GeoTab, Inc. RE44199
1:21-cv-00922 Filed Golden IP LLC [IP Edge] Rhapsody International, Inc. 9397627
8755763
6:21-cv-00676 Filed Digital Cache, LLC [Oso IP, LLC] Panasonic Corp. 6851015
8:21-cv-01132 Filed Hyper Ice, Inc. Merchsource, LLC
1:21-cv-00927 Filed Digital Cache, LLC [Oso IP, LLC] Pure Storage, Inc. 6851015
1:21-cv-00931 Filed Crimson IP LLC [IP Edge] IDEMIA Identity & Security USA, LLC 8868070
1:21-cv-00936 Filed Heritage IP LLC [IP Edge] Gimbal, Inc. 6854067
1:21-cv-00939 Filed Lecrew Licensing LLC [IP Edge] Audio Pro USA, Inc. 9516370
1:21-cv-00943 Filed Orbit Licensing LLC [IP Edge] CodePen, Inc. 8839195
9578040
1:21-cv-00948 Filed Orbit Licensing LLC [IP Edge] Limelight Networks, Inc. 9497035
9578040
1:21-cv-22362 Filed Stormborn Technologies LLC [IP Edge] Skypatrol, LLC, RE44199
1:21-cv-01262 Filed Truveris, Inc. SkySail Concepts, LLC 10817920
6:21-cv-00684 Filed Onstream Media Corporation Haivision Systems, Inc.
2:21-cv-00242 Filed K.Mizra LLC [Ginegar IP, Charles Jourdan Hausman] Sprint Corporation
T-Mobile
8958819
2:21-cv-00243 Filed K.Mizra LLC [Ginegar IP, Charles Jourdan Hausman] Verizon Communications
Cellco Partnership, Inc.
8958819
5:21-cv-00086 Filed Bandspeed, LLC Qorvo, Inc. 10791565
10999856
10887893
8873500
9883520
6987955
10602528
9379769
8542643
7903608
1:21-cv-03503 Filed Heritage IP LLC [IP Edge] Tanita Corp. of America, Inc. 6854067
1:21-cv-00959 Filed Invincible IP, LLC [IP Edge] DigitalOcean, LLC 9635134
8938634
9678774
3:21-cv-13240 Filed Auspex Pharms., Inc.
Teva Pharmaceutical
Aurobindo Pharma, Ltd. 9233959
10959996
9296739
9550780
8524733
9814708
6:21-cv-00694 Filed XR Communications, LLC Hewlett-Packard 10715235
1:21-cv-00982 Filed AstraZeneca Alembic 10183020
1:21-cv-00988 Filed Bel Power Solutions, Inc. Monolithic Power Systems, Inc. 6949916
7456617
7049798
6936999
7000125
7080265
6:21-cv-00698 Filed Mcom IP, LLC Diebold Nixdorf, Inc. 8862508
2:21-cv-00896 Filed Zunum Aero, Inc. Safran Electrical & Power, S.A.S.
Boeing
Safran Helicopter Engines, SASU
Safran Corporate Ventures, S.A.S.
Safran SA
et al.
1:21-cv-00914 Filed Magnacross [IP Edge] Infinite Electronics International, Inc. 6917304
1:21-cv-00918 Filed Digi Portal LLC [IP Edge] Uber Technologies, Inc. 5983227
9626342
8352854
7171414
7565359
1:21-cv-00921 Filed Tunnel IP LLC [IP Edge] Fender Musical Instruments Corporation 7916877
6:21-cv-00677 Filed Grecia Estate Holdings, LLC [William Grecia] Facebook, Inc. 8402555
6:21-cv-00680 Filed Flexiworld Technologies, Inc. [Quarterhill f/k/a Wi-Lan] Roku, Inc. 11029903
10768871
9042811
10140073
9836259
9965233
2:21-cv-00866 Filed Swirlate IP LLC [IP Edge] Zetron, Inc. 7154961
7567662
8:21-cv-01130 Filed Centre One Lumen Technologies, Inc. fka Centurylink, Inc. a Louisiana corporation 8724643
7486667
1:21-cv-00937 Filed Heritage IP LLC [IP Edge] VivaChek Laboratories, Inc. 6854067
1:21-cv-00944 Filed Mellaconic IP LLC [IP Edge] Canary Connect, Inc. 9986435
6:21-cv-00685 Filed Bluestone Ventures Inc. Uber Technologies, Inc. 9921077
10502583
2:21-cv-00240 Filed Orange Electronic Co. Ltd. Autel Intelligent Technology Corp., Ltd. 8031064
2:21-cv-13177 Filed Astellas US LLC
Medivation LLC
Medivation Prostate Therapeutics LLC
Astellas Pharma
The Regents of the University Of California
Sandoz 7709517
8183274
1:21-cv-05691 Filed Orbit Licensing LLC [IP Edge] EidosMedia, Inc. 8839195
9578040
1:21-cv-03705 Filed Heritage IP LLC [IP Edge] Cannon, Inc. 6854067
6:21-cv-00691 Filed Xylon Licensing LLC [IP Edge] Amarillo National Bank 8719165
6:21-cv-00693 Filed Liberty Patents, LLC [Antonelli, Harrington & Tohmpson, LLC; Jon Rowan] NXP USA, Inc. DBA NXP Semiconductors USA, Inc.
NXP
NXP Semiconductors
8458496
8127156
7509504
1:21-cv-00969 Filed Novartis Micro Labs 8927574
7314938
8168655
8367701
7928122
7745460
9447077
9353088
7790743
9216174
9085553
9890141
10124000
8592450
8084047
3:21-cv-13219 Filed Endobotics, LLC Medtronic, Inc.
Medtronic
7648519
8083765
7147650
8105350
8:21-cv-01595 Filed 2BCom, LLC [Markman Advisors] Digi International, Inc. 6885643
7876736
6928166
7251237
7460477
4:21-mc-80157 Filed Garrity Power Services Samsung Group
3:21-cv-13320 Filed Orexo US, Inc.; Orexo Sun Pharmaceuticals Industries Limited
Sun Pharmaceutical
10874661
10946010
1:21-cv-11098 Filed Blue Engine Biologics, LLC Arteriocyte Medical Systems, Inc. 6811777
9320762
8741282
6:21-cv-00696 Filed Carolyn W. Hafeman LG Corp. 9021610
9672388
10325122
10789393
9390296
9892287

 

Image Source: Deposit Photos
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The Author

Jonathan Stroud

Jonathan Stroud is Chief IP Counsel at Unified Patents, LLC, where he manages a growing team of talented, diverse attorneys and oversees a docket of administrative challenges, appeals, licensing, and district court work in addition to IP, administrative, amicus, policy, marketing, and corporate matters.

Prior to Unified he was a patent litigator for Finnegan, Henderson, Farabow, Garrett & Dunner LLP, and a former medical devices patent examiner at the USPTO. He earned his J.D. with honors from the American University Washington College of Law; his B.S. in Biomedical Engineering from Tulane University; and his M.A. in Print Journalism from the University of Southern California. He enjoys teaching, writing, and speaking on patent and administrative law.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 18 Comments comments. Join the discussion.

  1. Josh Malone July 9, 2021 8:42 am

    PTAB carnage continues.

  2. Paul Morinville July 9, 2021 1:36 pm

    I could not find a single PTAB petitioned by a small or medium company. All are large corporations and most are global multinationals.

  3. Curious July 9, 2021 3:27 pm

    Second Mystery Entity Files IPR on VLSI Patents: A second unknown LLC of recent vintage has filed an IPR challenge against the patents that formed the basis of the recent $2.18 billion judgment against Intel in Judge Albright’s court. The first, OpenSky, LLC, effectively copied earlier challenges by Intel—ones denied under Fintiv for a trial date that was pushed back but eventually led to the judgment. This second, Patent Quality Assurance, LLC, appears to be tied to Austin-area former Baker Botts lawyers, but is of murky origin. The petition purports to fix problems with the OpenSky petition (namely, the retention of different testifying experts) and begs institution over the other. Motivations remain murky, but one can imagine the value attached to having the Office hear the challenge on the merits.
    This exemplifies the problem with the current IPR system. Intel loses at the PTAB and some “mystery entity” comes and attempts a do-over. If VLSI loses at the PTAB or in Federal Court, it is over. There is finality. The simple problem is that there is no finality with the PTAB.

    Mystery entities can keep popping up — forcing patent owners to defend and defend and defend until either they get a panel sympathetic to the arguments being presented or the patent owner runs out of money. While the second approach may not work against large companies, it is exceptionally effective against smaller entities.

    As I have written many times, a small entity owning a valuable patent is oftentimes a negative-value asset — you’ll get thrown into the PTAB so much that you’ll pay more in legal fees than what you’ll get in licensing fees.

    Any reform of the IPR system (and no, the IPR system isn’t going to get dispensed with altogether so focus your efforts on something realistic) should only permit a patent to be challenged a very limited amount of times and/or only by entities being accused of patent infringement. Moreover, anyone challenging a patent using the IPR system should be precluded from subsequently challenging the same patent (based upon prior art) in Federal Court.

    The IPR system was intended to be a cost-effective way to resolve validity issues. That’s not what is happening. Rather, the IPR system is being used by infringers to bludgeon patent owners into submission.

    Someone accused of patent infringement should be able to take advantage of the (supposed) cost of the IPR system. However, if that is the path the choose, they give up the right to challenge that same patent in Federal Court. Otherwise, the cost-effectiveness disappears. It is up to defendants to choose what approach they take. However, once they’ve chosen one path, they should be precluded from choosing the other path as well — no two bites of the apple.

    This is how I would reform the IPR system:

    1) retain presumption of validity of patents (this means a higher burden in order to invalidate)
    2) only defendants sued for patent infringement can employ the IPR system
    3) defendants get to choose whether they will use the court or the IPR system to invalidate based upon 102/103.
    4) once defendant selects one approach, they cannot select the other
    5) prior decisions on same art/issues (either by Federal Court or by the PTAB) are binding precedent (i.e., no relitigating the same issue in different forums).
    6) institution should be based upon a substantial new question of patentability (i.e., the same standard as ex parte reexamination — again, no relitigating prior issues)

    This approach gives defendants a way to (supposedly) cheaply address validity issues. However, it also protects the rights of patent holders from the abuses that are prevalent today.

  4. Anon July 9, 2021 4:05 pm

    Mr. Morinville,

    Are you surprised?

  5. Josh Malone July 9, 2021 4:09 pm

    @Curious, won’t work. APJs are told their job is to invalidate. Therefore they will copy/paste “we are persuaded by petitioner’s [hired] expert that it would have been obvious to combine [x, y, and z prior art familiar to examiner and inventor]”. Your proposal does not solve for this typical case.

  6. Litig8or July 9, 2021 6:05 pm

    No sh** Sherlock, because those are the companies that the trolls target on the reg

  7. Paul Morinville July 9, 2021 6:44 pm

    Anon @4. I was told that the reason for AIA’s creation of the PTAB was to help SMEs with a lower cost alternative to litigation. I just thought I might find one, just one, SME filing a petition.

    So am I surprised. Well, no. I’m not. Because the AIA was not promoted by SMEs. It was promoted by huge global corporations.

  8. Paul Morinville July 9, 2021 6:48 pm

    Litig8or, I thought the AIA was passed because SMEs were being targeted by “trolls”. It’s not? Did Leahy and Smith lie to us?

    Or perhaps that was the case then and now they only target huge global corps. Then of course, the AIA must be a great success.

  9. Curious July 10, 2021 7:25 pm

    Curious, won’t work. APJs are told their job is to invalidate.
    I’ve won at the PTAB — we were small and they were big. As such, I know that not everything get invalidated.

    Therefore they will copy/paste “we are persuaded by petitioner’s [hired] expert that it would have been obvious to combine [x, y, and z prior art familiar to examiner and inventor]”. Your proposal does not solve for this typical case.
    My approach isn’t about addressing the law of obviousness. That is another issue for another day. My approach is to address how the lack of finality in the IPR system is being abused.

    If “x, y, and z prior art [is] familiar to [the] examiner,” then perhaps institution could be denied for lack of “a substantial new question of patentability.” I want to avoid litigating the same issue over and over again — fishing for a “right” result from a panel at the Board and/or the courts. If the new prior art being cited isn’t different than the old prior art (as to the relied upon portions), then institution shouldn’t be granted.

    Institution should only be granted:
    1) for new art — substantively DIFFERENT than the old art,
    2) only once per infringer, and
    3) only for accused infringers.

    Maybe you want to start the negotiations by advocating for allowing only 102 rejections but giving that away to further negotiations. However, IPR are here to stay.

  10. Pro Say July 10, 2021 9:55 pm

    “IPRs are here to stay”

    When SCOTUS itself is unwilling to eliminate the Death Squad PTAB . . . even after they’ve admitted that it’s unconstitutional . . . Curious is, sadly and unfortunately for American innovation, likely correct.

    Now the scalpel necessary to remove the PTAB cancer is solely in the hands of Congress.

    Do they have the courage to wield it in order to save the patient?

  11. Anon July 10, 2021 11:05 pm

    Curious,

    Interesting points, but whether or not institution was granted is outside of your power to contest, is it not?

    Also, whether or not they are here to stay very much depends on the subsequent fights (not YET fought), eh?

  12. Jonathan Stroud July 11, 2021 9:05 am

    It’s interesting that one LLC doing exactly what literally hundreds of LLCs do in the district court each month provokes such outrage. I’m assuming these commenters are equally angry with the way IP Edge filed almost 50 complaints for file-and-settle litigation in the same week. Or is that different because of which side of the V they fall at the Board?

  13. Pro Say July 11, 2021 9:24 am

    “IP Edge filed almost 50 complaints for file-and-settle litigation in the same week.”

    As you well know Jonathan, the only reason patent owners like IP Edge have to resort to filing suits at all is because the large majority of infringing companies in the large majority of cases refuse to negotiate in good faith for a licenses.

    So no; we commenters are not — because we have no reason to be — equally angry with companies like IP Edge filing complaints.

  14. Anon July 11, 2021 11:32 am

    Mr. Stroud,

    In addition to the point by Pro Say (a solid point, by the way), your question BEGS the notion that it is a strict ‘bad’ to even want to enforce one’s property rights.

    It is a red herring that there is any “and settle,” as THAT is firmly within the providence of the system — as set up — to resolve property right disputes.

    Further, the acrimony you see is NOT because there is a ‘V’ in any instance, but because the Efficient Infringer mantra (and their propaganda) have become so pervasive that the first leaning when it comes to IP (even by those like you – if we want to be generous) by the ‘general public’ IS that the holder of the patent must be up to something nefarious.

    It is perfectly legitimate for a business entity to set themselves TO BE the putative “Tr011.”

    The notion of that very same “Tr011” is the very mechanism that helped derail the omnibus war chest gathering of Big Corp – and is something to be celebrated, not denigrated.

    It is ‘seemingly innocuous’ quips like yours that are often the insidious purveyors of propaganda that lead to a mindset of “patents are bad.”

  15. Curious July 12, 2021 12:43 am

    It’s interesting that one LLC doing exactly what literally hundreds of LLCs do in the district court each month provokes such outrage.
    Exactly? You and I must be working with a different definition because what they are doing is hardly identical to what is happening in the district courts.

    If this one LLC files a frivolous IPR request and that gets denied, what happens? They’ll get their substantial filing fee back and the patentee loses money defending it. However, here is little to prevent another anonymous LLC from filing something similar. That is my point — there is no finality in this process.

    In contrast, if the patent owner sues and the district court determines there was no infringement, once the appeal process is over, the patentee doesn’t get a do-over. There is finality.

    I’m assuming these commenters are equally angry with the way IP Edge filed almost 50 complaints for file-and-settle litigation in the same week.
    Were the defendants infringing? What is the problem with these complaints then? BTW, what is YOUR problem with that? The more people get sued, the more business you get. You are an umbrella salesman complaining about the rain.

    Or is that different because of which side of the V they fall at the Board?
    The difference is the lack of finality at the Board. You may care only about who has the deep pockets to pay your bills, but there are those of us who care about individual inventors and small companies who get railroaded by infringer-enablers like yourself and those you represent.

    I know you have a vested interest in protecting the tools of your trade, but try to come up with some better arguments. Many may be idealistic, but we aren’t a bunch of rubes here.

    As you well know Jonathan, the only reason patent owners like IP Edge have to resort to filing suits at all is because the large majority of infringing companies in the large majority of cases refuse to negotiate in good faith for a licenses.
    Truth.

  16. mike July 12, 2021 1:29 pm

    As you well know Jonathan, the only reason patent owners like IP Edge have to resort to filing suits at all is because the large majority of infringing companies in the large majority of cases refuse to negotiate in good faith for a licenses.

    I’ll second that. And everything else Pro Say, Curious, and Anon have said here.

  17. Paul Morinville July 12, 2021 1:36 pm

    “I’m assuming these commenters are equally angry with the way IP Edge filed almost 50 complaints for file-and-settle litigation in the same week.”

    Yes. I am angry that they were forced to sue. If patents were presumed valid, hard to invalidate, and earned injunctive relief, the infringers would have licensed the IP long before going to court, and probably before any infringement started.

  18. mike July 13, 2021 9:58 am

    I’ll also second Mr. Morinville.

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